RM4151 Research Methodology and IPR I MCA Regulation – 2021 2022-2023

UNIT V -PATENTS

Patents – objectives and benefits of patent, Concept, features of patent, Inventive step, Specification,
Types of patent application, process E-filing, Examination of patent, Grant of patent, Revocation,
Equitable Assignments, Licences, Licensing of related patents, patent agents, Registration of patent
agents.

Patents

Definition

A patent is protection granted by a national government for an invention. This protection excludes others from
making, using or selling an invention for a period of up to 20 years. Many drug companies and university
researchers seek patent protection to recover research and development costs for patents related to specific
genes and proteins, laboratory techniques and drugs. In order for patents to be issued by a granting agency
such as a Patent Office they need to be new, useful and not obvious to others working in the same field.

Let us now consider the factors that provide an understanding as to why patents are so important.

Importance:

Exclusive Rights: As mentioned earlier, patents provide exclusive rights which allow the inventor to exclude
others from using the invention. Particularly, for 20 years from the date of filing the patent application.

Strong Market Position: Since the inventor has obtained the exclusive right to the invention, the inventor can
exercise this right by preventing others from commercially using the patented invention thereby reducing the
competition and thus establishing a place in the commercial market.

Higher Returns on Investments: Having invested a considerable amount of time and money in developing
the invention, under the umbrella of exclusive rights, the inventor could bring in the invention to the
commercial market and thus obtain higher returns on the investment. Of course, this depends on the economic
utility of the patent. For this reason, the inventor must ensure the commercial viability of the patent before
investing in a patent.

Opportunity to License or Sell the Invention: Sometimes, the inventor might not want to exploit the invention
himself. In such cases, the inventor can sell or license the rights to commercialize it to another enterprise. This
would result to bring royalty and revenue to the inventor.

Positive Image for the Enterprise: Business partners, investors, and shareholders may perceive the patent
portfolios as a demonstration. Particularly, the high level of expertise that is provided by the subject matter
experts. This acts as a spectacle of the organization’s capability. Further, this may prove useful for raising
funds, finding business partners and also increase the company’s market value.

Requirements for patentability

1. Usefulness/Utility - The claimed invention must be useful/functional. A machine must work according
to its intended purpose and a chemical must exhibit an activity or have some use.

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2. Novelty -The invention must be different than anything known before; it must not have been described
in a prior publication and it must not have been publicly used or sold.

3. Non-obviousness/Ingenuity -The invention must be a development or an improvement that would not

have been obvious beforehand to workers of average skill in the technology involved.

Novelty and non-obviousness are judged against everything publicly known before the invention, as shown in
earlier patents and other published material. This body of public knowledge is called "prior art.”

Types of Patents

There are three types of patents:

1. Utlity patents - issued for any process, machine, article of manufacture, or compositions of matters, or
any new useful improvement. In general, this type of patent protects the way an item is used or works.
For example,Golf Club Head.

2. Design patents - issued for a new, original, and ornamental design for an article of manufacture. In
general, this type of patent protects the appearance of an item. For example, Eyeglasses.

3. Plant patents - issued for asexually reproduced, distinct, and new variety of plants. For
example, Lavender plant named ‘Belpur’.

Patent Families

A patent family:

● is a group of patent documents from different countries that protect the same invention.

● defines the geographic scope of patent protection for an invention.

● is useful for locating alternate language versions of a patent document.

What kind of protection does a patent offer?

In principle, the patent owner has the exclusive right to prevent or stop others from commercially
exploiting the patented invention. In other words, patent protection means that the invention cannot be
commercially made, used, distributed, imported or sold by others without the patent owner's consent.
Is a patent valid in every country?

Patents are territorial rights. In general, the exclusive rights are only applicable in the country or region
in which a patent has been filed and granted, in accordance with the law of that country or region.
How long does a patent last?

The protection is granted for a limited period, generally 20 years from the filing date of the application.
objectives and benefits of patent

The global patent system should:

i. Be coherent and balanced:

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a. offering a fair level of protection to inventors/applicants from all backgrounds

b. providing a fair balance between the rights of inventors/applicants and third parties

ii. Provide legal certainty to inventors/applicants and third parties alike

iii. Promote high quality patents by ensuring that patent protection is provided only to inventions that are
new, involve an inventive step and are capable of industrial application

iv. Support economic growth:

a. enabling global patent rights to be acquired in an efficient manner

b. promoting consistent results in multiple jurisdictions

c. promoting innovation and competition

features of patent

Patents are valid for 20 years from the date you file your application, but patent rights are, in general, only
enforceable from the date your patent is approved by the U.S. Patent and Trademark Office (USPTO).

According to the patent office, an invention is “any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof.” For technology product managers, just
about any new product or feature is patentable: hardware, software, business methods, etc. Every new feature
and product you create should be examined for patentability.

While just about anything can be patented, a few criteria must be met. Specifically, patented inventions must
meet three characteristics: novel, useful and not obvious.

Novel. The novelty requirement is straightforward: Your invention must be new. Inventions that already exist
cannot be patented. This gets a little tricky, because you can patent new uses for existing products. This
frequently happens when a new use is discovered for an old pharmaceutical drug, where new testing shows
the drug to effectively treat a completely unrelated disease. The new use has to be truly new and unrelated to
the original use.

Useful. The usefulness requirement is two-fold: That your invention has a useful purpose and that it must
actually perform its intended purpose. A useful purpose can be almost anything: The patent office, for
example, issued Patent No. 6,368,227 to a boy who claimed the invention of swinging side-to-side, claiming
the usefulness of joy. Along with good feelings or whatever other benefit you wish to claim, the invention
must also work in order to be useful. If the patent office thinks your invention might not work, they may ask
you to prove that it does.

Patent application number 20,030,114,313 claimed the invention of warp drive, which is “a system whose
propulsion relies on warping space-time as opposed to the ejection of material to provide thrust.” While the
application packed more than400 paragraphs of technical detail, the patent office cast a skeptical eye, and
asked the inventor to provide a working model before the patent application could be examined. (A model,
working or otherwise, was unfortunately not delivered by the inventor.)

Not obvious. The “not obvious” requirement means that an inventive step is required. Your invention has to
be different enough from what is already out there in the field in order to be patentable. This is an area,
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however, where the law is not very [Link] are regularly granted for surprisingly small improvements in
a [Link] should not let your thinking on this requirement prevent you from trying to patent something. If
you have an idea that you think is worth patenting, explain it to your patent agent or attorney, and let them tell
you if they think it meets the “not obvious” requirement.

In addition, you cannot patent the laws of nature, physical phenomena, and abstract ideas. Things like Isaac
Newton’s theory of universal gravitation or Albert Einstein’s theory of general relativity are not patentable.

Three basic kinds of patents are allowed:

1. Utility patents, which cover inventions that function uniquely to produce a useful result.

2. Design patents, which cover the unique, ornamental, or visible shape or surface of an object.

3. Plant patents, which cover asexually reproducing plants.

Most ideas from product managers are likely to be patented as utility patents.

Anatomy of a patent application

Patent applications consist of three main components: the description, the drawings, and the claims. There are
a few other components, but the preceding three are the primary ones to consider.

The description is a detailed description of the invention and the “prior art” or related earlier products,
concepts, or inventions. The description will explain all of the components of the invention in detail.

The drawings should show the main components of the invention. Software and business-method patents,
which do not always contain a physical device, often use flowcharts for the drawings.

The claims describe, in legal terms, the invention for which patent protection is claimed. They are written in
a precise form, based on statutory requirements and conventions that initially can be difficult to decipher. The
claims break down your invention into small, precise descriptive statements.

Inventive step

WHAT IS INVENTIVE STEP OR NON-OBVIOUSNESS?

For an Invention to be Granted or Registered as a Patent, an Inventive Step/Non-Obviousness is one of the

criteria that has to be fulfilled by the Invention for qualifying as a Patentable subject matter. Almost every
Patent Office examines the applied Patent Application based on the Inventive step or Non-Obviousness. Some
Patent offices use the term Inventive Step while others use Non-Obviousness. However, the yardstick for
determining inventive step/non-obviousness slightly differs country wise.

WHAT IS INVENTIVE STEP?

The philosophy behind the Inventive step is that an Invention should not be a mere collection and repackaging
of existing information. In an Invention, the Inventive step involves technical advancement as compared to
the existing knowledge, it should not be based on an abstract idea. For example: if an Invention for which a
patent is sought is solving a problem by providing a solution which may be similar to a solution conceived by
a person skilled in the art who is working in the same field by applying his/her acquired technical knowledge
or by going through the existing literature, in that case the Invention will not be considered as an Inventive in
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nature, since the solution to the problem is obvious to the person skilled in the art. However, if the invented
solution is better than the existing solutions in terms of efficacy or accuracy etc. then such a solution may be
deemed to have an inventive step.

1. According to Indian Patent Law, "inventive step" means a feature of an invention that involves
technical advance as compared to the existing knowledge or having economic significance or both and that
makes the invention not obvious to a person skilled in the art.

2. According to European Patent Law, an invention shall be considered as involving an inventive step if,
having regard to the state of the art, it is not obvious to a person skilled in the art. If the state of the art also
includes documents within the meaning of Article 54, paragraph 3, these documents shall not be considered
in deciding whether there has been an inventive step.

3. According to US Patent Law, a patent for a claimed invention may not be obtained, notwithstanding
that the claimed invention is not identically disclosed as set forth in section 102, if the differences between
the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious
before the effective filing date of the claimed invention to a person having ordinary skill in the art to which
the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was
made.

ROLE OF PATENT OFFICE FOR FINDING INVENTIVE STEP:

All the major Patent Offices examine the applied Patent application on the basis of Inventive step as one of
the criteria for granting of a Patent. Examination of filed Patent application is a tedious task and the Patent
office applies different methods for the examination of Inventive step. For example, Indian Patent Office may
identify the presence of technical advance as compared to the existing knowledge or having economic
significance or both, European Patent office may apply Could-Would approach, USPTO may apply the
principles developed through landmark judgments such as Teaching Suggestion Motivation (TSM) test,
depending upon the matter disclosed in the Patent Application

Patent rights create substantial benefits for the inventor; these should not be handed to everyone who uses
his/her knowledge and training to draw only basic conclusions from existing knowledge. Patent Rights are a
reward for the execution of exceptional ideas and are meant to encourage out-of-the-box thinking.

From the above discussion, it can be concluded that the Inventive step is an indispensable criterion for judging
an Invention for granting of a Patent. It is imperative that an Invention should have technical advancement as
compared to the existing knowledge and it should not be a mere workshop improvement. Therefore, Inventive
step should be ascertained in order to avoid the rejection of the patent application during office action.

Specification

Introduction

A patent draft is a technical document presented in a legal format that has

two primary functions: (a) establish novelty and (b) establish inventive step or non-obviousness of an
invention.

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We should always keep in mind that the purpose of a patent draft or specification is to highlight the existing
problem in the current state of the art or technology and provide a solution, which is new and not obvious to
a person skilled in the art.

It is paramount to communicate the invention in a written format and to comply to the statuary requirements
for smooth and faster prosecution. The decision of grant is based on the written specification as most of the
times an examiner would not ask for a model or prototype or the product. The patent draft should be drafted
in a manner to fully or particularly describe an invention, as a result allowing a person skilled in the art to
perform the invention without any undue diligence.

PARTS OF A PATENT SPECIFICATION

1. Title of the invention;

2. Field of the invention;

3. Background of the invention;

4. Object of the invention;

5. Summary of the invention;

6. Brief description of the drawing;

7. Detailed description of the invention;

8. Claim(s); and

9. Abstract.

STEPS OF PATENT DRAFTING

Step 1: Determine Novelty

The novelty of an invention is determined prior art search on databases including:

● Patent lens

● Google patent

● USPTO search database

● IPO search database

● Pubmed, etc.

Step 2: Determine Inventiveness or non-obviousness

The inventiveness of a mechanical invention can be determined by setting up problem-solution statement and
compare it with the existing art, and create a claim strategy.

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● Illustration: For example, suppose an invention disclosure elucidates a technology for selective bed
cooling, with individually venting sides, whereby each side of the bed has a selective different
temperature.

● Set up a Problem Statement: In temperature controlled beds,two people utilising the same bed are
subjected to the same temperature.

● Set Up a Solution Statement: a ventilating system for a bed whereby each side of the bed can have a
different temperature.

● Compare and Contrast with the existing technology: a ventilating system having individually venting
sides of bed whereby each side of the bed can have a selective different temperature.

Step 3: Drafting Patent Specification

The drafting should highlight novelty and inventiveness in each section.

Formulate Claim Strategy: Before drafting, a claim strategy should be formulated which includes combining
the Novelty and Inventiveness, “venting of conditioned air in a particular section of bed with flexible partition
of bed longitudinally.”

1. TITLE OF THE INVENTION

The title should sufficiently indicate of the subject matter and disclose the specific features of the invention
(word limit – fifteen).

Probable Titles referring the above illustration

“A bed for selectively venting of ambient air”

“Bed Ventilator Unit”

Comment: The title should be free of fancy expression, such as unique, novel, better, great, best, etc.

2. FIELD OF THE INVENTION

IBriefly indicates subject matter to which the invention relates, advantages, areas of application and preferable
use.

Format:

“This invention relates to …………………”, and use of invention

● “This invention relates to a cooling bed”

● The present invention relates generally to bedding and, more specifically, to a ventilating system for
a bed for selectively venting either ambient air or heated air into the bed linen of a bed approximate
the foot of the bed through a pair of vents clipped to the mattress in spaced apart fashion.

Comment: please note that vernacular should be used selectively; as the field of invention restricts the scope
of use. Hence, if only a cooling bed is claimed as a use then other uses are automatically disclaimed.

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3. BACKGROUND OF THE INVENTION:-

The background should clearly indicates (a) the problem to be solved, and (b) state of the art technology (Prior
Art). The indication must highlight development in the field, patents, scientific literature etc.

4. OBJECT(S) OF THE INVENTION – The object of the invention should clearly bring out the:

● necessity of the invention;

● clearly mention the technical problems associated with the existing technology and the solution for
that, bringing out the differences between the claimed invention and the prior art; and

● the solution sought by the invention should be clearly brought out as object(s) of inventions.

Format:

1st Object: The principal/primary/ main object of this invention is……………,

2nd Object―Another object of this invention is ……………..,

3rd and subsequent Objects ―A further object of this invention is/ yet another object of the invention is
…………. etc.r

5. SUMMARY OF THE INVENTION

The summary of invention briefly describes the embodiments of the invention before giving the details of the
invention, in the next section and the method of performing it. The statement should clearly set forth the
distinguishing novel features and uniqueness of the invention for which protection is desired. This part is
intended to declare different aspects of the invention.

6. BRIEF DESCRIPTION OF THE DRAWING

As mentioned earlier that usually an examiner would not ask for a model or prototype or a product, hence to
communicate the product it should be augmented with as many drawing as possible.

7. DETAILED DESCRIPTION OF THE INVENTION

The main object of the detailed description is to enable a person skilled in the art to reduce the invention into
practice without further experimentation; therefore a complete picture of the invention should be presented.

Fully and particularly describe apparatus/system/device with drawing illustrations (referring to the drawings),
describing each and every component with connectivity and also describing the Best Method of performing
the invention.

8. CLAIM(S)

Claims define the contours of rights, if and when a patent is granted for an invention. Hence, claims are the
most critical part of a Patent Application. In a complete specification the description is followed by claims.
Since, claims define the scope of legal protection, it is suggested that they should be drafted carefully to cover
all the aspects of the protection being sought and at the same time adequately distinguishing the prior art from
the claimed invention.
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HOW TO WRITE CLAIM(S)

A Claim usually consists of three parts: Preamble, Transitional phrase; and Body.

Format: A claim starts with, I / We Claim (as applicable)

A Claim usually consists of three parts: (a) Preamble, (b) Transitional phrase; and (c) Body.

(a) Preamble: identifies the category of the invention and sometimes the purpose

“A bed ventilator”

(b) Transition Phase: The transition phrase may be words and phrases such as :

– comprising of

– including

– consisting of

– consisting essentially of

If the invention is an improvement on a product or a process existing in the prior art, the invention should be
distinguished very clearly by characterizing the claim with the claim will have two parts separated by the word
‗characterized by‘or ‗wherein‘. The part coming before ‗characterized by‘is the prior art while that comes
after will be the features of the invention.

(c) Body: Body of the claim lists the features of the invention in one sentence

9. ABSTRACT

An abstract is a concise summary of the matter contained in the specification, indicating clearly the technical
field to which the invention belongs, technical problem to which the invention relates and the solution to the
problem through the invention and principal use or uses of the invention. The abstract as pointed here above
should be concise, hence is limited to one hundred and fifty words only.

Types of patent application

A patent is a statutory authorization or license which establishes a right or title over an invention for a
particular period. It is primarily meant for the prevention of other businesses or its kind from making, using
or selling an invention of a similar nature. In this article, we look at the different types of patent application
in detail.

Patent Application

A patent application is a plea for the grant of a patent for the invention described and claimed by the applicant.
An application for this purpose generally comprises of a description of the invention, added with official forms
and correspondence relevant to the application. Patent applications are of several types, and each one of them
caters to a unique purpose.

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Types of Patent

The types of patent application are:

1. Provisional Application

2. Ordinary or Non-Provisional Application

3. Convention Application

4. PCT International Application

5. PCT National Phase Application

6. Patent of Addition

7. Divisional Application

The rest of the article covers these types in detail.

Provisional Application

A provisional application, also known as a temporary application, is filed when an invention is under
experimentation and isn’t finalized. Moreover, it is a preliminary application which is filed before the patent
office for claiming priority, as the Indian Patent Office follows the ‘First to File’ system (known popularly as
the First-Come-First-Served-Basis). In technical terms, early filing of an invention will prevent the occurrence
of any other related inventions from being designated as prior art to the inventor’s application.

To add more, this type of patent application is filed when an invention requires additional time for
development. If an application is supported by a provisional specification, the applicant is necessitated to file
a complete specification within twelve months from the date of filing a provisional application. A failure in
this part would render the application void.

An application for this purpose must include a brief explanation of the invention and must be drafted in a
meticulous manner so as to ensure that the priority rights are secured for the invention.

Ordinary or Non-Provisional Application

This type of application is filed if the applicant doesn’t have any priority to claim or if the application is not
filed in pursuance of any preceding convention application. It must be supported by a complete specification,
the likes of which must depict the invention in detail.

Complete specification can be filed through:

● Direct Filing – wherein complete specification is initially filed with the Indian Patent Office without
filing any corresponding provisional specification.

● Subsequent Filing – wherein complete specification is filed subsequent to the filing of the
corresponding provisional specification and claiming priority from the filed provisional specification.

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A complete specification entails the following:

1. Title

2. A preamble to the invention.

3. The technical field of the invention.

4. Background of the invention.

5. Objects of the invention.

6. Statement of the invention.

7. A brief description of the drawings

8. A detailed description of the invention.

9. Claims

10. Abstract

Convention Application

A convention application is filed for claiming a priority date based on the same or substantially similar
application filed in any of the convention countries. To avail a status of convention, an applicant is required
to file an application in the Indian Patent Office within a year from the date of the initial filing of a similar
application in the convention country. To re-iterate in simpler terms, a convention application entitles the
applicant to claim priority in all the convention countries.

PCT International Application

As can be deciphered from its name, a PCT Application is an international application. Though the application
does not provide for the grant of an international patent, it paves the way for a streamlined patent application
process in many countries at one go. It is governed by the Patent Corporation Treaty and can be validated in
up to 142 countries. Filing this application would protect an invention from being replicated in these
designated countries.

Unlike other applications, it renders the application a time-frame of 30-31 months to enter into various
countries from the international filing date or the priority date, thereby affording the applicant with additional
time to access the viability of the invention.

Apart from this, it renders the following other benefits:

● The application provides an International Search Report citing prior art, which discloses whether or
not the invention is novel.

● It provides an option for requesting an International Preliminary Examination Report, which is a report
that contains an option on the patentability of the invention.

● The aforementioned reports facilitate the applicant to make more informed choices early in the patent
process, as he/she can amend the application to deal with any conflicting material. Also, the applicant
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would receive a glimpse of the patentability of the invention before incurring charges for filing and
prosecuting the application in each country.

An applicant from India can file this application at:

● The Indian Patent Office (IPO), which acts as the receiving office.

● The International Bureau of WIPO, either after availing a foreign filing permit from IPO or after six
weeks and 12 months of filing an application in India.

PCT National Phase Application

It is considered essential for an applicant to file a national phase application in each of the country wherein
protection is sought for. The time-frame for filing the same is scheduled within 31 months from the priority
date or the international filing date, whichever is earlier. The time-limit could be enhanced through National
Laws by each member country.

With respect to the National Phase Application, the title, description, abstract and claims as filed in the
International Application under PCT shall be considered as the Complete Specification. Apart from this, the
regulations applicable for filing and processing an ordinary patent application is also applied here.

Patent of Addition

This application must be filed if the applicant discovers that he has come across an invention which is a slight
modification of the invention which has already been applied for or patented by the applicant. It can only be
filed if the invention doesn’t involve a substantial inventive step.

A patent of addition is only granted after the grant of the parent patent, and hence no separate renewal fee
should be remitted during the term of the main patent. Moreover, it shall be granted for a term equal to that of
the patent for the main invention, and therefore expires along with the main patent. The date of filing here
shall be the date on which the application for patent of addition has been filed.

Divisional Application

An applicant may choose to divide an application and furnish two or more applications if a particular
application claims for more than one invention. The priority date for these applications is similar to that of the
parent application.

process E-filing

Firstly, E-filing of patent services was first introduced in India in the year 2007. This was revamped as
the Comprehensive Online Patent Filing Services in the year 2012. All filings are in accordance with Schedule
1 of the Patents Rules, 2003.

1) The first step is to register at Online Filing of Patents platform. After registering, the user ID and password
are generated.

2) The Comprehensive Online Patent Filing Services has a dual login facility. This means that an Applicant
or Agent can login either using the User ID and password or the digital signature.

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3) Thereafter, logging in the website has a list of comprehensive steps that allow the Applicant to download
client software on which he can create and sign the patent application.

4) After uploading the digitally signed patent application the (auto-calculated) payment must be made.

5) The status of the application can be checked.

6) The acknowledgment will generate after receipt of the payment.

This, put in a nutshell, is the process for patent e filing of applications.

Benefits of e-filing of patents in India:

i. The foremost advantage of e-filing of patent applications is its flexibility. In the sense that a patent
application can be filed at any time and at any place.

ii. Increase in speed in another benefit. The electronic medium ensures that the application is filed
immediately. There can be no delays as is usual in the case of manual filing. This also ensures that an
acknowledgment is generated immediately.

iii. Additionally, even at the patent office, the accuracy increases, given the fact that there is no scope for
manual entry of any of the details. This reduction in the margin of error ensures a more efficient review.

iv. While drafting patent applications the primary concern for most applicants is adherence to the format. E-
filing makes this process easy owing to the available software that can cross-check the format of the

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application in order to ensure that they comply with the required format. E-PCT is an online platform that can
be used for filing PCT applications. Moreover, e-filing allows for validation with the IPO database.

v. In addition, the introduction of the Comprehensive Online Patent Filing Services has ensured that there are
minimum transaction errors.

vi. After registration, each Applicant or Agent will have a unique user profile where he can add and update
his digital signature.

Thus, making e-filing of patents compulsory is a welcome move as the transactions will be faster with lesser
chances of errors. If you find it difficult to file your patent electronically, you can always engage professional
help to guide you through the process and E-filing patent application in India.

Examination of patent

Steps and Procedure for getting Patent in India

To understand the Steps and Procedure for getting a Patent in India in a clearer way let’s assume 3 illustrations
as below,

1. You (the inventor): who has an innovative idea to patent

2. Patent professional (Patent agent or attorney)

3. Patent office (controller, examiner and other staff)

We would be seeing what is the involvement of each one of them at every step while getting patent. along the
way, we would also be seeing relevant forms and costs involved at each stage. So, let’s get started…

Step 1: Idea incubation phase

Every invention has its beginning in an Idea. In this phase, you capture your idea properly, get clarity on each
element of the innovative idea, do fill in the blanks with appropriate research and experimentation.
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Include drawings, diagrams, or sketches explaining the working of the invention. the drawings and diagrams
should be designed so as to explain the working of the invention in a better way with visual illustrations. they
play an important role in understanding your invention.

Once you have your innovative idea completely captured with all technical details, then you perform a
preliminary search. This search is for finding answers to questions that build a working disclosure of the
invention.

Some of the questions in the invention disclosure form would be:

● What is my idea/invention? How does it work?

● What problem my innovative idea is solving

● What is the field of my invention

● What are the advantages of my innovative idea

● What are the elements or components of my innovative idea

● Can I draw a block diagram or device or flowchart or sketch that explains my invention in a better way

● What are the advantages of my invention over existing knowledge that is prior arts

● Who are the competitors with what product or service.. etc..

This is the most important phase for inventor where an idea is taken from ideation phase to a working invention
disclosure that can be discussed with a patent agent or attorney. For this important section we have a complete
section about actions to take and worksheets Refer section on “Idea incubation phase”

steps and
procedure for
Responsibilities
getting Patent in
India

Collect relevant details on innovative idea

Inventor and create comprehensive invention
disclosure

Receive invention disclosure, perform

Patent agent or
patentability search, provide opinion and
attorney
Draft patent application

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Patent office —–

Costs: There are no costs involved in the idea incubation phase

The Outcome of this step:

The outcome of the idea incubation phase is the creation of a working invention disclosure that covers all
aspects of your invention completely. And which is ready to be shared with a patent professional.

Step 2 : Patentability search (optional step)

In this step, the patent agent or attorney who is working on your invention helps you in finding out whether
your invention meets all patentability criteria which are :

● Novelty

● Non-obviousness

● Industrial application

The patentability search is aimed towards finding out the novelty and non-obviousness of the invention, the
search identifies the closes possible prior arts (known to public) relating to your invention and based on the
results obtained an opinion about the patentability of your invention may be provided by patent professional.

Based on the results found and reviewed in a patentability search report, the patentability opinion may be
positive, negative or neutral. A positive patentability opinion indicates, you stand a good chance to get your
patent granted for your invention.

The patentability report and opinion helps you decide whether to go ahead with the patent or not, chances are
what you thought as novel might already been patented or know to public in some form of information. Hence
this reports saves lots of time, efforts and cost of the inventor by helping him decide whether to go ahead with
the patent filing process or not.

For more details on this Refer section on “working with patent or attorney”

steps and
procedure for
Responsibilities
getting Patent in
India

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answering questions by patent professional,

Inventor reviewing patentability search report, and
closest possible prior arts.

understand invention disclosure and

patent agent or
performing patentability search, prepare a
attorney
report and give an opinion on patentability

Patent office —–

Costs : the professional fees for patent professional can range from Rs. 10,000 to Rs. 15,000 for performing a
patentability search

Time : the time required is about 5-7 working days

The outcome of this step:

The outcome of this patentability search report is:

● You get to know about the opinion on patentability of invention

● The inventive step and novel feature would be identified when our invention is compared with the
closest possible prior art found in the patentability search report

● The patentability search report would give you an overall picture of the state of the art that is the
current stage of the technology and you may find some white areas where you can do further research
and development

● The inventive step identified via patentability search can be leveraged while writing patent
application and especially claims of patent such that our patent application stands a good chance going
through he examination stage to granted patent.

● In case the patentability opinion is negative, then it saves a lot of cost and time which would have
unnecessarily invested in proceeding with patent filing process and eventually getting application
rejected.

Note: in spite of all these benefits of the patentability search, this is an optional step. You can choose to directly
file the patent application without going for patentability search, which is Not recommended by the way.

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Step 3 : Patent drafting/writing

Patent drafting is the stage where your invention disclosure and patentability search report is used to create
the patent application.

Patent drafting/writing is a specialized job, it requires years of practice and experience with patent law to draft
a good patent application. To get an idea just read some of the granted patents from your domain. A patent is
a techno-legal document, technical as well as legal. Writing a patent as a project report or a technical thesis
(on your own ) and submitting it to patent office would be a mistake that can cause loss of opportunity to
patent your invention.

There are many rules and care to be taken while drafting claims, writing detailed descriptions, writing different
embodiments of the invention, describing inventive step etc…

This is one of the most important step in life cycle of a patent and a good patent application written by an
experienced patent agent/attorney should survive not only through the examination phase till the grant of
patent but also it should survive the commercialization phase where actual money is made by licensing or
selling patent rights, where competitors should not be able to work around your patent. Writing such patent
application is a skill and that’s what explained in detail in our section on “Preparing patent application (patent
drafting)” in “working with patent agent or attorney”

steps and
procedure for
Responsibilities
getting Patent in
India

answering questions by patent professional,

identifying the inventive step and providing
Inventor
detailed disclosure if required. Review
patent application.

writing patent application that provides

Patent agent or maximum possible protection to invention,
attorney following all rules for writing patent
application.

Patent office —–

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Costs: the professional fees for patent professional can range from Rs. 25,000 to Rs. 40,000 for performing a
patentability search

Time: the time required is about 8-15 working days

The outcome of this step:

The outcome of this patent drafting stage is :

● A completed patent application that can be filed to patent office

● A patent application well written by an experienced patent agent/attorney that survives through the
examination phase, till the grant of patent and commercialization phase.

Step 4 : Filing patent application

Filing patent application into patent office:

Based on the readiness of your invention, the decision has to be made whether to go for a provisional patent
application or complete patent application. If you are not quite ready with complete invention and requires
further research and development yet you don’t want to lose on priority date for filing patent application then
going for provisional patent application is recommended.

There are many advantages for filing provisional patent application which are discussed in detail in a separate
chapter about “filing patent application”

Provisional patent application:

● When to go for provisional patent application

● advantages

● costs

● elements of provisional patent application

● mistakes to avoid

The patents are territorial in nature, so if you file patent in India, you are getting protection in India only. You
cannot stop use of invention outside India then. Therefore, if you desire that your invention should be protected
in multiple countries, depending on your preference of countries Different options, paths and strategies for
filing patent application is to be adopted with the guidance of a patent agent/attorney.

International patent application:

● different options and routes available

● strategies to go about international patent filing

● Patent Cooperation Treaty (PCT) application

● Paris convention and other routes

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The details about patent filing is explained in section “filing patent application”

steps and
procedure for
Responsibilities
getting Patent in
India

reviewing patent application. Signing

Inventor formalities like forms, (power of attorney) to
submit along with the patent application.

preparing patent application for filing.

Recommending best filing route and options
Patent agent or
for international patent application (if
attorney
required). Submitting relevant forms and
fees in prescribed manner

receive patent application and provide the

Patent office receipt along with date and time of filing the
patent application.

Costs: there is no professional fees for patent filing patent application (provided fees is paid for patentability
search and patent drafting )

Government forms and fees: Relevant form for patent application is Form 1

There are many things needed to consider before giving an exact fees amount, as it depends on number of
sheets in patent specification, number of claims etc. but below are approximate costing for this stage.

Individual
Small Entity Other than small entity
inventors

Application for
1600 4000 8000
grant of patent

Time : the time required is less than 1 day (if filed online)

The outcome of this step:

The outcome of this filing patent application is :

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● You receive a receipt for filing patent application in government patent office with invention title, your
name along with time and date of filing.

● Now, your invention is safe and you have secured a priority date for your invention, which makes you
less worried about confidentiality and safety of your invention.

● The patent application will be taken to subsequent steps as per forms, requests and fees submitted as
per standards.

Step 5: Publication of application

Generally, the application is automatically published after 18 months from the filing date. No fees or action is
required by inventor. If you don’t want to wait till the expiry of 18 months, An early publication request can
be made along with prescribed fees.

The early publication request can be made (optional step) with form 9 and by paying prescribed fess as per
table below; in general the patent application is published within a month form request for early publication.

steps and
procedure for
Responsibilities
getting Patent in
India

optional step of filing early publication

Inventor
request along with Form 9 and Fees.

Patent agent or optional step of filing early publication

attorney request along with Form 9 and Fees.

the patent application is automatically

Patent office published or if requested early publication is
done.

Government forms and fees:

Form 9. Remember, these is no fees for publication of application automatically after 18 months of filing date.
The fees mentioned below is for optional step if you want to go for early publication request.

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Individual
Small Entity Other than small entity
inventors

Request for early

2500 6250 12500
publication

Step 6: Request for examination (RFE)

The patent application is examined only after receiving a request for examination that is RFE. The
inventor/applicant needs to file a request for examination (RFE) within 48 months of the filing date or priority
date. This RFE is made with form 18 and the government fees for the same is mentioned in table below.

Upon receiving this request the controller gives your patent application to a patent examiner who performs
searches for checking patentability of the invention (as per patentability criteria). and then the examiner creates
a first examination report FER of the patent application.

Everything happening to the patent application before grant of patent is generally called as patent prosecution.

The first examination report submitted to controller by examiner generally contains prior arts (existing
documents before the date of filing) which are similar to the claimed invention, and any objections raised
regarding patentability requirements for the invention. Same examination report (with objections) is
communicated to you (inventor) / patent applicant.

steps and
procedure for
Responsibilities
getting Patent in
India

the patent agent or patent attorney makes

request for examination on behalf of you. or
Inventor
request for Expedited examination with form
18 A if applicable

request for examination is submitted with

Patent agent or
Form 18 and Fees. or request for Expedited
attorney
examination with form 18 A if applicable

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receive request for examination and

examiner check patent application for
Patent office
patentability and other criteria and generates
First examination report

Government forms and fees:

Form 18. The fees for request for examination RFE is as below.

Individual
Small Entity Other than small entity
inventors

Request for
4000 10000 20000
examination

Step 7: Response to objections

The majority of patent applicants (inventors) will receive some type of objections based on the examination
report. The best thing to do it analyze the examination report with patent agent/attorney and create a response
to the objections raised in the examination report. This is a chance for an inventor to communicate his novelty
and non-obviousness of the invention based on the kind of objections received.

You (as an inventor) / applicant are supposed to answer the objection raised within 12 months from the date
on which the First examination report is forwarded to you.

The inventor and patent agent create and send a response to the objections that tries to prove to the controller
that his invention is indeed patentable and satisfies all patentability criteria.

Or optionally accepts the objections and amends the patent application as pointed out in the First examination
report.

If the controller is satisfied with the response to the objections or the amended patent application. Up on
finding the patent application in order of grant, The patent is granted to you (inventor) / applicant as early as
possible !!! with a seal of patent office and the date of grant is registered in register of patents.

Responsibilities

help patent agent in technical matters of

Inventor invention (If required) with drafting
response for objections.

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draft the response to objections raised with

Patent agent or the help of inventor. Or amend the patent
attorney application accordingly. Request for hearing
if desired.

receive response of objections and decide

Patent office whether a hearing is needed and whether to
grant patent or not

Professional Fees:

The patent agent /attorney may charge a professional fees to respond to objections based on complexity of the
objections and number of objections received. The fees for response to objections varies from Rs. 6000 to Rs.
25000 depending up on complexity, subject matter and number of objections.

Step 8: Grant of patent

The application would be placed in order for grant once it is found to be meeting all patentability
requirements. The patent is granted to you (inventor) / applicant as soon as possible with the seal form patent
office and The grant of patent is notified in the patent journal which is published time to time.

Responsibilities

patent is granted to you. As per section 48

you get right to exclude others from using,
Inventor
selling offering for sale, importing your
patented invention

Inform inventor about procedures, renewals

Patent agent or
and communication to patent office after
attorney
grant of patent

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Grant the patent for invention or reject the

patent based on response to objections
Patent office
raised. Notify grant of patent in patent
journal.

Grant of patent

Patent granting procedure

Filing: applicants choose a submission category – i.e., national, regional or international – and file an
application. The initial filing is considered the “priority filing” from which further successive national,
regional or international filings may be made within the ‘priority period’ of one year, in accordance with the
Paris Convention for the Protection of Industrial Property.

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Formal examination: the patent office ensures that all administrative formalities have been met, that the
relevant documentation has been included in the application, and that all associated fees have been paid.

Prior art search: in many countries the patent office carries out a search of the prior art – all relevant
technological information publicly known at the time of filing the application. Using extensive databases and
expert examiners in the specific technical field of the application, a ‘search report’ is drafted that compares
the technical merits of the claimed invention with that of the known prior art.

Publication: in most countries, the patent application is published 18 months after the priority date; i.e., after
the date of first filing.

Substantive examination: if a prior art search report is available, the examiner checks that the application
satisfies the requirements of patentability – that the invention is novel, inventive and susceptible to industrial
application, compared to the prior art as listed in the search report.

Grant/refusal: the examiner may either grant the patent application without amendments, change the scope
of the claims to reflect the known prior art, or reject the application.

Opposition: many patent offices allow third parties to oppose the granted patent within a specified period on
the grounds that it does not satisfy patentability requirements.

Appeal: many offices provide the opportunity for an appeal after the substantive examination or after the
opposition procedure.

Revocation

What is Revocation of Patent?

A Patent when is sealed or granted, it is not always the case that the Patent should stay unobstructed by
any person or third party throughout the life of the Patent. Certain people can challenge the Patent on
several grounds, and the way by which the Patent can be challenged is by Revocation of Patent.

The Patent Act does not assume that the Patents granted to be valid; hence, the rights granted on such granted
Patents cannot be absolute. The third parties which are required to seek consent from Patentee of the granted
Patent for practicing of any exclusive rights bestowed upon him/her are also given an opportunity to challenge
the validity of the Patents.

Section 64 of the Patent Act, 1970[1], does not restrict the grounds of Patent Revocation to only those provided
in Section 64, whereas section 25 (2) also set out grounds that are used in post-grant opposition proceedings
is restrictive in nature. Hence, it can be said that Section 64 is not exhaustive.

Who can file for the Revocation of Patent Petition?

The Patent Act, 1970, in Section 64 provides for the persons who can file the petition of Revocation of
Patent. The persons are as follows:

● any interested person;

● the Central Government;

● the person is making the counter-claim for the infringement of a patent in a suit.
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Where can a Revocation of Patent Petition be filed?

A petition for the Revocation of Patent should be filed in the Intellectual Property Appellate Board (IAPB)
by any of the persons specified under section 64 of the Patent Act, 1970. As per Section 104 of the Patent
Act, 1970, provides for the jurisdiction aspect for filing of the Revocation of Patent petition.

Section 104 states that the Revocation petition claiming Infringement of Patent should not be filed in any
court, which is inferior to District Court having the jurisdiction to try the Infringement suit. On the other hand,
in case of a counter-claim is filed for the Revocation of Patent made by the defendant, such counter-claim or
suit for Patent Infringement should be transferred to the High Court.

Read our article:Penalties, Suits and Appeals Against the Patent Infringement

What are the grounds for the Revocation of Patent?

The grounds for Revocation are provided under the following sections of the Patent Act, 1970:

Section 64-Grounds for Revocation of Patent

The various grounds for Revocation of Patent as per section 64 of the Patent Act, 1970, are as follows:

● An invention with similar specifications in any other Patent already granted in India with an earlier
filing date or priority date;

● The grant of Patent was done to a person who was not entitled for the same;

● The Patent was wrongfully obtained by a person from another person who is actually entitled to the
same. Another person who is actually entitled to the Patent can apply for Revocation of Patent;

● The invention which is claimed in the granted Patent is not actual as per Section 2(1)(j) of the Patent
Act, 1970;

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● In the Patent the invention claimed lacked in novelty with regard to prior public use or prior
knowledge;

● The invention is not of any usage, means that the Patent is not in operation at all or is not providing
the desired results as specified in the specifications of Patent;

● In the Patent the invention is obvious with regard to prior public use or prior knowledge;

● The Patent lack any inventive step;

● The claimed invention does not take account of any personal document or secret use or secret trail;

● The claimed invention which is imported from abroad is not new in the country India. The invention
is publicly known and is in use in India before the date of publication or priority date.

● The scope of any claim of a Patent is not clearly or sufficiently defined in the specifications of the
Patent;

● The claim of Patent is not fairly based on the matters of the specifications of Patent;

● The specification of the Patent does not fairly or sufficiently describe the Patent or the methods by
which the Patent is invented;

● The Patent was obtained by false representation or suggestion. The suggestion or representation should
relate to any fact or statement made in connection with the grant of Patent or relate to any of the
specifications of the Patent;

● The Patented invention claimed to fall under Section 3 or Section 4 of the Patent Act, 1970. Section
3 states the categories under which the invention if lies are not patentable in India. On the other hand,
Section 4 states that any invention related to atomic energy is not patentable in India;

● The applicant of the Patent has not disclosed all the required information as per Section 8 of the Patent
Act, 1970. Furthermore, the applicant has furnished false information related to the invention;

● The applicant of the Patent has not followed the compliance of the secrecy direction by the Controller
as per Section 35 of the Patent Act, 1970;

● Non-compliance of the secrecy direction by the Controller for filing of Patent application outside India
without the prior permission of the Controller;

● The permission for amendment of complete specifications of Patent under Section 57 or Section 58 of
the Patent Act, 1970, is obtained by applicant by fraud;

● The specification of the Patent does not completely disclose properly the geographical origin or source
of the biological material used in the invention;

● The claimed invention in the specification of Patent is a traditional knowledge available within any
local or indigenous community in India or elsewhere.

In the judgment of the case, Dr. Aloys Wobben & Anr. vs. Yogesh Mehra & Ors, the Supreme Court (SC)
has explained that as per Section 64 of the Patent Act, 1970, Patent Revocation can be sought either by filing

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a Revocation petition to the Intellectual property Appellate Board (IPAB) or by a counter-claim in a suit of
Patent Infringement. The challenger of Patent Revocation cannot attempt to proceed simultaneously against
the Patent holder in both the matters. The attempt to seek one of the remedies by the Court will bar the
challenger from availing the other remedy.

Section 65-Revocation in cases related to Atomic Energy

Section 65 of the Patent Act 1970, provides that the Revocation of Patent can be done by the Central
Government. The Central Government can revoke the Patent only after may revoke a Patent after establishing
that the invention specified in the Patent is related to Atomic Energy. The grant of Patent for an invention on
Atomic Energy is restricted as per the provisions of the Atomic Energy Act, 1962. Hence, the Central
Government cannot allow the grant of Patent for an invention related to Atomic Energy in India.

In the case of Enercon (India) Ltd and Ors. vs. Enercon Gmbh [(2014) 5 SCC 1], the Supreme Court laid
down the fact that when post-grant opposition proceedings are instituted by a party in the Court related to a
Patent, then the same party cannot institute a petition of Patent Revocation or counter-claim of Patent
Revocation proceeding against the same Patent simultaneously.

Section 66-Revocation of Patent in Public Interest

Section 66 of the Patent Act, 1970, states that where the Central Government is of the opinion that the
Patent or the manner in which the rights related to Patent are exercised Is disadvantageous to the public
at large or the State, then such a detrimental Patent should be revoked. The Patent holder should be given
proper opportunity with respect to his/her right of being heard. After the opportunity is given to the Patent
holder and observing all the circumstances, the decision for the Revocation of Patent will be given accordingly.

For example, Company Avesthagen Ltd. was granted a Patent on a product containing Jamun, Chandan, and
Lavangpatti, which was anticipated to be used in for the treatment of diabetes. The Company Avesthagen filed
for Patent for the same product in the European Patent Office (EPO). The Patent was turned down under the
ground that the Patent is infringed upon the Traditional Knowledge Digital Library (TKDL).

The Central Government of India, on finding out about the filing of Patent in EPO, revoked the Patent granted
to the company Avesthagen by the Indian Patent Office under Section 66 of the Indian Patents Act. The ground
of rejection was that the Patent is detrimental to the public interest at large and is also mischievous.

The company Avesthagen argument that though it was traditional knowledge, but the circumstance that when
the plants are used in the particular combination specified in Patent, the plants show a faster effect. On the
other hand, the Central Government argued and proved that the fact that these plants specified in the
specifications of Patent are used for the management of diabetes for a very long period and was known to the
public at large for centuries. The Central Government stated that it is very obvious that the extracts plants will
perform the same function. Hence, the Court held that the grant of Patent could not be done just for re-
validating a traditional knowledge.

Section 85-Revocation by Controller for Non-working

As per Section 85 of the Patents Act, 1970, the Patent can be revoked for non-working. Any person interested
or the Government can apply for the Revocation of Patent to the Controller with respect to the Patent for
which compulsory license is granted. The Patent Revocation should be filed within two years of the grant of
the compulsory license.
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The grounds for Revocation are:

● The invention which is patented is not working the territory of India;

● The reasonable requirements of the common public from the Patent is not being met;

● The invention which is patented is not available to the common public at a reasonable, affordable price.

The application made by any person or the Government should be made in Form 19 along with the
evidences supporting the Revocation. The application if is made by a person interested, so such an interested
person should disclose the nature of his/her interest.

Equitable Assignments

Assignment

The term ‘assignment’ is not defined in the Indian Patents Act. Assignment is an act by which the patentee
assigns whole or part of his patent rights to the assignee who acquires the right to prevent others from making,
using, exercising or vending the invention. There are three kinds of assignments

● Legal Assignment
● Equitable Assignment
● Mortgage

Legal Assignment: An assignment (or an agreement to assign) of an existing patent is a legal assignment,
where the assignee may enter his name as the patent owner. A patent which is created by deed can only be
assigned by a deed. A legal assignee entitled as the proprietor of the patent acquires all rights thereof.

Equitable Assignments: Any agreement including a letter in which the patentee agrees to give a certain
defined share of the patent to another person is an equitable assignment of the patent. However an assignee in
such a case cannot have his name entered in the register as the proprietor of patent. But the assignee may have
notice of his interest in the patent entered in the register.

Mortgages: A mortgage is an agreement in which the patent rights are wholly or partly transferred to assignee
in return for a sum of money. Once the assignor repays the sum to the assignee, the patent rights are restored
to assignor/patentee. The person in whose favor a mortgage is made is not entitled to have his name entered
in the register as the proprietor, but he can get his name entered in the register as mortgagee.

Licences

What Is Patent Licensing?

Patent Licensing refers to the act of assigning the ownership of a patent to a third party such that s/he
can make, use, and sell your invention either exclusively or non-exclusively, for an amount of pre-
decided royalties.

In other terms licensing a patent is a mutual agreement between individual or companies or a company which
you choose to make, use, and sell your product in the market. As you are the patent holder, your ownership
retains in the invention and you enjoy royalty payment on the product.

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It is always best to license your patent to a company that is one of the top players/which has captured market
interest already in the domain of your invention. In that way, your patent would fit the product/IP gap.

Pro Tip: While licensing the product, do research about the licensee and contact inventors’ organizations such
as the United Inventors Association. This is a safety practice that you should undertake because if by any
chance your relationship with the licensee gets spoiled, you can take further necessary steps with their help.

What to know before License a Patent?

Before you decide to license your patent, it is a good practice to ask oneself the following questions:

● Do you have the capital to invest or licensing will be a better option?

● If you choose to license a patent, will you choose individuals or companies for it?

● If selling the patent is an option, would you consider it? How important is it to you to maintain the
rights of the patent?

Once these questions are answered, you would have a clear framework and could go ahead with further steps.
You would have an idea of what exactly are your options (manufacture, license, or sell), your potential
licensees and whether you’d be assigning licenses to third parties exclusively or not.

A lot of companies have made a ton of money by merely strategically licensing their patents. NuCurrent, a
wireless charging startup, for instance, earns millions of dollars by licensing its patents to the likes of Apple
and Motorola that use their patents in their products. They even recently sued Samsung for infringing their
patents related to wireless charging. We conducted a preliminary analysis to assess the strength of their patent
which you can read from here. Another innovative giant, the big blue, known to the world like IBM, is one of
the largest patent licensors in the world, reportedly earning billions in-licensing and sale of its patent portfolio.

Royal royalties, huh!

Speaking of it, the royalty rate of a patent can vary from five percent to twenty percent depending on the
licensee.

While we’re still talking about licensors, it would be unfair to not mention ARM Holdings PLC. The company
designs a series of inter-related intellectual property (IP), including microprocessors, Physical IP, and
supporting software and tools. Reportedly, ARM’s entire revenue- which exceeds a billion dollars – comes
from licensing its patents.

A solid business model, licensing!

Now that we are aware of what patent licensing is, let’s have a look at various types of patent licenses and
how they differ from each other.

8 Types Of Patent Licenses

There are eight types of patent licenses:

Exclusive License

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In an Exclusive License, there is the transfer of ownership by the patent holder. The only thing which the
owner has is the title. This is just like stepping into the shoes of the patent owner and acquiring all the
responsibility for it. The only thing which the licensee cannot do is that they cannot license the patent to
anyone else. It is exclusively granted to her/him and s/he cannot further license it to anybody else.

Non-exclusive License

In this contract, the license for the patent can be granted to more than one party, and all of them can maintain
control over it and bring it to the market.

Sub Licenses

This is a process where the licensee has the right to issue a license to different organizations for the making
of the product. In other words, the licensee has the right to giving the license further to a third party who has
the advantage to create the product. However, the profits will be dependent on the contract between the
primary licensee and third party.

Cross-Licensing

This is a process when there could be an exchange of licenses between different organizations and creators.
This is required when the invention requires the support of other products to make its place in the market.

Compulsory License

A little complicated, and usually reserved for pharmaceutical patents, compulsory licensing is when the
government allows someone else to practice your patented invention – even against the will of the patent
owner – for a set amount of money. For a detailed explanation, click here.

Voluntary Licensing:

Also applicable for pharmaceutical patents, voluntary licenses are an act of goodwill towards the society.

In this scenario, Patent holders may at their discretion, license to other parties, on an exclusive or non-
exclusive basis, the right to manufacture, import, and/or distribute a pharmaceutical product. Depending on
the terms of the license, the licensee may act entirely or effectively as an agent of the patent holder; or the
licensee may be free to set the terms of sale and distribution within a prescribed market or markets, contingent
on payment of a royalty. Either option or arrangements in between would allow for substantial price
reductions.

Carrot License

This licensing approach is suitable when the potential licensee is not in the practice of the patented invention
and does not fall under any obligation to take a license. This kind of license is a marketing tactic where the
patent owner gives the licensee a glimpse of what could be achieved by acquiring a license for their patent.

Something along the lines of “my patent technology is considerably great and by licensing it you can sell a
number of products.” Or it can be, “our patented technology used is cheaper and the profits would be more if
you license it”. In other words, it is simply a market practice in which you convince a prospective licensee to
take a license.

Stick Licensing
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Stick licensing is the complete contrast of carrot licensing. This approach of licensing can be used when the
prospective licensee is already in use of your patented technology and, thereby, infringing your patent.

The proposition of value here states that “go for the license or else… (I will see you in court).” One actually
should take care that the “carrot” license is really a “stick” license in the cover-up. After all, if there were no
threat of litigation why would someone ever license a patent? Clever? Yes!

Now that we have an idea of the kind of licenses that exist, let us find out the pros and cons of licensing.

Why License Your Patent?

When you sell a patent to a big company, you might get a great financial reward for your invention but you’ll
lose any future rights over it. Patent licensing can, hence, be an alternative to selling a patent.

Despite the obvious benefit of generating income, there are few more plus points of licensing your patent.
Listed below are a few of them.

Licensing is an easy way to make your product available

Licensing is the most convenient and easy method to convert your product idea into reality, without having to
invest any resources while ensuring a lifetime* of royalty.

Note: The lifetime refers to the lifetime of the patent, and not the person.

The stress of manufacturing cost vanishes for the licensor

There is no manufacturing cost or distribution cost for the inventor as the product is licensed to an individual
or company. You actually become liability-free and enjoy royalty for the same.

Easy and quick launching of the product

For the launch of the product, there is a massive investment required. Even building a name in the market for
a product takes years. When you go through an established source – that is by licensing your patent to a well-
famed company – your product will enter the market in a faster and shorter time period.

Provides you with a competitive advantage

Launching a product in the market through an established source helps you to get a competitive advantage. If
the unit is one of the biggest distributors then your product will capture a larger market and build its name
which will be ultimately a benefit for you. This will not only fetch a lot of royalties but also make your name
prominent in the leading inventors.

Easy to enter foreign markets

When we talk about capturing foreign markets, it is to be noted that it is not easy for an individual to single
handily get into the big market. In this scenario, licensing will be a great option as they set up links with the
firms which will help your product reach the broader horizon.

The benefits are multiple and this is an exhaustive list, so we would stop listing more. But we believe you
have enough reasons now to license your patent. The next question that arises is – How?

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How to license a patent?

Getting a licensee is not an easy job. For finding licensing opportunities you need to make your technology
considerably available in the market so that people could get a clear concept of your invention.

It is always great to have expertise in the IP and technology domain which can fetch you the right source. If
you don’t have the expertise, the best course of action is to hire an expert for the same, which will help you to
avail good returns.

Whichever course you choose, here are a few ways one could use to find licensees for their patent.

patent agents

What Is a Patent Agent?

A patent agent, also known as a patent practitioner, is a professional licensed by the United States Patent and
Trademark Office (USPTO) to advise on and assist inventors with patent applications. Patent agents may
also provide patentability opinions and help with the preparation and filing of documentation related to patent
applications.

Patent agents assist inventors with completing and submitting all patent-application paperwork, searching for
prior art, writing the inventor's legally enforceable claims of ownership to the invention, revising rejected
patent applications, and deciding when it's best to abandon an application. In the U.S., there were over 48,000
people on the list of registered patent attorneys and agents in 2021, with over 36,000 of them also licensed to
practice law. Patent attorneys are patent agents who also practice law. One can search for a licensed patent
agent at the USPTO's website.1

KEY TAKEAWAYS

● Patent agents help inventors prepare, file, and see patent applications become registered patents in the
United States Patent and Trademark Office (USPTO).

● In the U.S., over 48,000 people serve as patent agents.

● Patent agents must be licensed by the USPTO in order to practice and represent clients before that
body.2

Understanding Patent Agents

The USPTO recommends that patent applicants hire a patent attorney or patent agent to assist with the
application process because of its legal complexity. 3 In the United States, patent agents can perform many of
the same tasks as patent attorneys, including representing clients before the USPTO. However, unlike patent
attorneys, patent agents cannot represent clients in other legal settings, such as prosecuting a patent
infringement in court.

Patent Agent vs. Patent Attorney

A client who primarily needs help filing a patent application might hire a patent agent, instead of a patent
attorney, and save money by only paying for the level of expertise required for the job. It is also possible,
though not widely recommended, to prepare and file a patent application pro se, without direct professional

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assistance. Someone who has considerable free time and sufficient interest to learn about and manage the
complexities of the process might choose the do-it-yourself route.

The right patent agent for a particular inventor should have both expertise in the subject-matter of the invention
and experience working with the type of applicant, whether an individual or a large multinational corporation.
If an inventor does hire a patent agent rather than represent themselves, the USPTO will only communicate
with the agent regarding the filed patent application.

Patent Agent Requirements

While patent agents are not required to have completed law school or passed the state bar exam, they must
have passed the USPTO's "patent bar exam," which is formally called the Examination for Registration to
Practice in Patent Cases Before the United States Patent and Trademark Office. 2 A patent agent might be a
current or former university professor; many patent agents have advanced degrees. Patent agents sometimes
work for law firms and assist patent attorneys in preparing cases. However, as agents, they cannot represent
clients in a regular courtroom.

The USPTO registration examination measures an applicant's knowledge of U.S. patent procedures, federal
rules, regulations, and ethical guidelines. The exam, which features 100 multiple-choice questions, is offered
year-round. Candidates have six hours to complete the test, which is divided into three-hour morning and
afternoon sessions of 50 questions each.

Registration of patent agents

The India Patent Office (IPO) grants Patent Registration in India for Inventions. Once the Patent is registered,
the Applicant gets monopoly over his/her Invention for a prescribed period of time (Normally twenty years
from the Priority date/Patent filing date). Applicant gets the sole right over the invention to exclude others
from making, using, selling and importing the Patent.

In order to get the Patent Registration in India, a specific procedure provided in the Patents Act,
1970 and The Patents Rules, 2003 needs to be followed. Indian Patent Office with its branch offices in Delhi,
Mumbai, Kolkata, and Chennai holds the authority for providing Patent Registration in India. The appropriate
jurisdiction for Patent filing under said branch offices is normally decided based on the Applicant’s domicile
or place of business or the place from where the invention actually originated. One can also file an application
for Patent Registration through online procedures.

Patent Registration in India:

If an Applicant is looking for Patent Registration in India, we are happy to provide you with our services and
help you through the Patent registration process in India. We also provide assistance for international Patent
registration.

PATENT REGISTRATION PROCESS IN INDIA:

There are four main branches for Patent Registration in India. The Patent Registration offices are situated at
Kolkata, Delhi, Chennai and Mumbai.

First Step for Patent Registration in India: Filing of Patent Application in Patent Registration Office,
India:
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Applying for the registration of Patent is the first step to start the process of Patent Registration in India. The
question then arises is, who are eligible for filing Patent Application in India for Patent Registration? To
answer this question, the Patent Act says that Patent application for the invention may be made by "True &
First inventor of the Invention" "Assignee of the person claiming to be the true & first inventor" "legal
representative of any deceased person who immediately before his death was entitled to make Patent
application" for the Patent Registration. Therefore, only defined Applicant is eligible for filing of Patent
Application for Patent Registration in India. For Patent Registration in India, Indian Patent Office accepts the
prescribed Forms and documents along with the Official fees as given under the First Schedule of Patents
Rule.

Below is the prescribed Forms and documents which need to be filed in the designated Patent Office
along with the Official Fees for the Patent Registration :

The following forms are to be submitted in the Patent Registration office to complete the Patent Registration
process:

Form-1 (Application for grant of a Patent) : It includes the details of the Inventor(s), Applicant(s), type of
Patent Application is filed, title of the invention, certain declaration from the Applicant and signatures of the
Inventor(s), Applicant(s) and authorized Person.

Form-2 (Provisional/Complete Specification) : It includes the information for the type of Application, the
title of the invention, description, claims, abstract of the invention.

Form-3 (Statement and Undertaking) : It includes a statement and undertaking on behalf of the inventor for
updating the Controller for any foreign filing Application filed for Patent Registration.

Form-5 (Declaration as to Inventorship) : A declaration as to Inventorship must be filed in the Patent

Registration Office of India.

Form-26 (form for authorization of a Patent Agent/or any person in a matter or proceeding under the
Act) : In the case where Patent Application for Patent Registration in India is filed by Patent Agent or Patent
Attorney whose services are taken by the inventor(s), a form for authorization must be submitted in the Patent
Registration Office.

Further, in the case where Patent Application for Registration in India is based on the previous Patent
Application filed abroad under the Convention Patent Application (as under the Paris Convention) or PCT
route, a Priority document must be filed along with the application to the Patent Registration Office along
with other required documents. In the case where the previous Patent Application is in a language other than
Hindi or English, a Verified Translation of the same also needs to be submitted to the Indian Patent
Registration Office.

Form-28 (To be submitted by a small entity/start-up) : In order to take benefit under the category of small
entity/start-up, proof or evidence needs to be submitted.

At last, all the documents, Forms or Drawings must be signed by the authorized person or the inventor.

Second Step for the Patent Registration Process : Publication of Patent Application in the Official Gazette
:

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Once the Patent Application is filed, it will be published by the IPO after Eighteen (18) months in the Official
Gazette of the IPO for the Public. Publication of Patent Application is an automatic process; it does not require
any request from the Patent Office in India. However, if one wishes to publish early, a request for early
publication can be filed by the Applicant to the Patent Registration Office. On filing early publication, Patent
Application can be published within one Month from the date of filing of the request.

Third Step for the Patent Registration : Filing of Request for Examination :

There is a prescribed form and timeline for filing an application for registration of Patent. The application is
then examined by the authorities. The Controller examines the Patent Application, only after receiving of the
request for examination. Upon receiving the request for examination, the Patent application is examined by
the Patent Registration Office, India.

Fourth Step for the Patent Registration: Issuance of objection(s) in the Examination Report:

Once the process of examination is done, the Controller either grants the Patent registration or issues an
examination report. The report may include certain subject matter objection or procedural objection.
Normally, the Applicant gets six months’ time for submitting the reply of the Examination report. As a next
step, if Controller gets satisfied, grants the Patent else give a hearing option to the Applicant.

Fifth Step for the Patent Registration: Patent grant:

If the Patent application fulfils the prescribed criteria for a Patent Registration, it will be granted by the
Controller, published in the Official Gazette of the Patent Office India and issue a Certificate for the Patent
Registration to the Applicant.

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